Trademarks - What is a Conflict? What is a Strong Similarity?

Comprehensive trademark research consists of several layers:

• Researching comprehensive databases, such as Lexis-Nexis or Dialog
• Looking for similarities, such as synonyms, word placement & spelling variations
• Consultation with a trademark attorney if Conflicts or Strong Similarities arise

The hardest matter to determine is what's going to be a potential problem for you and what isn't. Once that is ascertained, further research into the company or companies is needed.

First, let's discuss the difference between conflicts and strong similarities.

What is a Conflict? Determining a conflict is very simple - it's any mark that is EXACTLY like yours. If the name AND the goods/services are EXACTLY the same, then it's a Conflict.

What is a Strong Similarity? These are harder to determine and require analysis. A Strong Similarity is a name that is similar enough in Sound, Appearance or Meaning to be confusingly similar to the average consumer. Here are some examples to aid you:

1. Joe has a pending Federal trademark for his auto detailing service called It's in the Details. Becky wants to call her new auto detailing service, It is the Details. They are both offering the same service and their trade areas cross. This is a Strong Similarity, based on Sound & Appearance and Joe's pending Federal application.
2. Mary has a Federally registered trademark for her clothing line, Scary Mary's Apparel. Dan wants to use the name Mary Frightful Wear for his clothing line. This is a Strong Similarity, based on Meaning & Mary's Federal registration.
3. Sam has a California state registered trademark for his restaurant, Crabtastic Eats! and has no plans to expand outside of the state and primarily serves locals. Hannah's restaurant, Crabtastic, is located in Maine. She also has no plans to expand outside of the state and primarily serves locals. This is NOT a Strong Similarity based on their different trade areas.
4. Lorena's online payroll service, Pay Up, has been in use for 15 years and has clients across the country. Gene wants to start an online payroll service called Wage Wizard. Neither of them have trademarks. This is NOT a Strong Similarity based on the dissimilarity in the names.

Naturally, there will be exceptions to every situation. For instance, similar trademarks (in name and goods/services) can coexist peacefully if both parties are comfortable with one another's existence. This can happen if trade areas do not cross (e.g. located on opposite coasts), if they appeal to different consumers (e.g. one sells to private industry while the other sells to the general public), etc.

Two important notes:

1) It's crucial that comprehensive research be conducted in order to decide if the name is truly available or not. Free preliminary sites found on the web are a great place to start but please be aware that this is merely scratching the surface of what's out there.

2) Determining what is a conflict or a strong similarity requires experience and it is very easy to over or under-react to marks you've found. If you're vacillating about any marks, contact a trademark research firm or an attorney for further consultation.

Now, once those similar marks have been found and determined, the next step is to check into them to determine whether or not there would be a likelihood of confusion between the two companies when used in commerce.

How to get started with your competitive check:

1. For Federal trademarks: check the current status of the application by going to USPTO Check Status site and entering the serial number in the appropriate box
2. Do a web search for the trademark name AND for the owner name.
3. Call information to find phone numbers and contact information for each company.
4. Contact each of the similarities to find out specifically what they do and what their business area is.

Specific questions to ask:

• What services do you provide? / What exactly does your product do?
• I notice you are located in _________, are you currently doing business outside that area?
• Do you have a web page that describes your business? Do you have a brochure that you could send or fax me?

It is best to not let on who you are - simply act like an interested consumer.

Once you've checked the status of the application & contacted the companies directly, the next step is to discuss the findings with a trademark attorney. S/he will assist you in determining your next steps.

* No claim is made to the ownership, knowledge or liability of the above personal and/or company names. The above examples are merely for informational purposes and should only be seen as such.

Shannon Moore is the General Manager, East Coast for TradeMark Express. Since 1992, TradeMark Express has met the needs of their clients with comprehensive research, application preparation, attorney referrals and trademark consultation. For further details, please visit us on the web at TradeMark Express or call Shannon directly at 800.340.2010.